Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 16 NOVEMBER 2022

Changes To Canada's Patent Rules: Introducing Excess Claim Fees

MLT Aikins LLP
MLT Aikins LLP
Contributor
MLT Aikins LLP

MLT Aikins LLP

FIRM OVERVIEW MLT Aikins is a full-service business law firm of more than 375 lawyers with a deep...

View firm profile
Explore more from MLT Aikins LLP

Amendments to Canada's Patent Rules (the "Rules") took effect on October 3, 2022, introducing some of the most significant changes to patent prosecution in the past 20 years.

CanadaIntellectual Property
Adam Lakusta
Adam Lakusta
Gregory Forrest
Gregory Forrest
Author LinkedIn connections

Amendments to Canada's Patent Rules (the "Rules") took effect on October 3, 2022, introducing some of the most significant changes to patent prosecution in the past 20 years.

Some of the most significant changes include:

  • Applicants will receive three examiner's reports before being required to make a request for continued examination ("RCE"). After the first RCE, applicants will be required to make an RCE every two examiner's reports. The fees for filing an RCE are the same as requesting examination (currently $816 for a large entity and $408 for a small entity).
  • A Conditional Notice of Allowance ("CNA") has been introduced so examiners can notify applicants of minor issues to be addressed along with payment of the final fee. Currently, it is unclear whether CNAs count toward the number of examiner's reports before an applicant is required to file an RCE and pay the associated fee.

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

View source

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

Patenting Innovation In Data Centres: Protecting Configurations, Cooling Technologies, And The Green Advantage

The rapid expansion of data centre infrastructure has made these facilities a focal point for technological innovation and intellectual property investment. From server configurations to advanced cooling systems, the technologies deployed inside data centres represent significant R&D expenditure and competitive advantages. Patent protection offers operators and developers opportunities to safeguard innovations...
GlobalIntellectual Property
Gowling WLG
Gowling WLG
Article

CIPO Issues Practice Notice On Redacting Postal Addresses And Removing Unrelated Documents From TDRS

The Canadian Intellectual Property Office has issued new guidance on when trademark applicants can redact postal addresses or remove documents from public records. Understanding these strict requirements and exceptional circumstances is crucial for protecting privacy while maintaining compliance with Canada's trademark registration transparency obligations.
CanadaIntellectual Property
Oyen Wiggs Green & Mutala
Oyen Wiggs Green & Mutala
Article

Fast-Tracking Your Patent Application In Canada: CIPO Expands The Key Technology Expedited Program

For Canadian innovators, the patenting process can seem unreasonably slow. In an effort to address this, the Canadian Intellectual Property Office (CIPO) created various procedures to expedite the examination process in Canada. Knowing which fast track options exist, when they make sense, and how to use them effectively can provide a significant commercial advantage.
CanadaIntellectual Property
Cassels
Cassels
Article

Trademark Owner Who Failed To File Evidence In Expungement Proceeding Has Registration Reinstated On Appeal

Trademark owners facing expungement for failing to file evidence of use in section 45 proceedings may have recourse through the Federal Court appeal process. The recent Lion Corporation case demonstrates how administrative errors by trademark agents can be remedied, allowing registrants to file additional evidence and potentially reinstate their registrations when the failure was beyond their control.
CanadaIntellectual Property
Oyen Wiggs Green & Mutala
Oyen Wiggs Green & Mutala
Article

President Trump Announces U.S. Counter-tariffs On Canada: Are They Lawful?

President Trump has invoked Section 338 of the Tariff Act of 1930 to impose new counter-tariffs on Canadian goods including dairy, alcohol, motorcycles, and metal products. The legality of this rarely-used statutory provision remains untested in court, raising questions about presidential tariff authority under the U.S. Constitution. Legal scholars debate whether Section 338 has been superseded by later trade legislation, while the administration argues Canada's retaliatory measures constitute discriminator
GlobalInternational Law
MLT Aikins LLP
MLT Aikins LLP
Article

Amendments Streamline Project List Under Impact Assessment Act

The Government of Canada has amended regulations under the Impact Assessment Act to streamline environmental reviews for major infrastructure projects, particularly interprovincial pipelines. These changes shift regulatory responsibility for certain energy projects to the Canada Energy Regulator while removing other project types from federal review following the Supreme Court's 2024 constitutional ruling.
CanadaEnvironment
MLT Aikins LLP
MLT Aikins LLP
Article

Implications Of Bill C-34, Canada’s Proposed Online Safety Framework, For Organizations

Canada's proposed Digital Safety Act introduces sweeping new obligations for social media platforms, AI chatbots, and interactive online services, requiring operators to protect children, mitigate harmful content, and implement age-verification measures. Organizations face substantial penalties of up to 5% of global revenue for non-compliance, backed by a new federal regulator with broad enforcement powers. What steps should your organization take now to prepare for this emerging regulatory framework?
CanadaPrivacy
MLT Aikins LLP
MLT Aikins LLP
Article

Permit Me To Explain: Bill C-39’s Plan To Build Canada Faster

The Canadian government has introduced Bill C-39, the Building Canada Strong Act, proposing to compress federal project approval timelines from five years to one year through consolidated permitting and streamlined processes. The legislation also modernizes transportation infrastructure through National Trade Corridors and reforms labour relations by strengthening collective bargaining while clarifying ministerial powers to intervene in work stoppages.
CanadaGovernment, Public Sector
MLT Aikins LLP
MLT Aikins LLP
Article

AI Data Centres In Canada: Legal And Regulatory Considerations For Developers And Investors Looking To Build

Developing AI data centres in Canada requires navigating complex corporate structuring, financing arrangements, regulatory approvals, energy supply agreements, real estate considerations, environmental permitting, and stakeholder engagement across multiple jurisdictions. This comprehensive guide examines the legal and regulatory frameworks governing the physical infrastructure side of data centre development, from site selection and power procurement to Indigenous consultation and municipal approvals.
CanadaEnergy and Natural Resources
MLT Aikins LLP
MLT Aikins LLP
Article

Not Beyond Reproach: Alberta Court Confirms Jurisdiction Over Alberta Energy Regulator

The Alberta Court of King's Bench has confirmed its jurisdiction to grant injunctive relief against the Alberta Energy Regulator despite a broadly worded statutory privative clause. This landmark decision, arising from Sumerian Oil & Gas's application to stay a suspension order affecting approximately 900 wells, represents one of the first considerations of the Supreme Court of Canada's recent Democracy Watch ruling and may significantly impact future disputes involving AER orders.
CanadaLitigation, Mediation & Arbitration
MLT Aikins LLP
MLT Aikins LLP